Breakthroughs in Chinese IP Court
June 16, 2016
We have recently won 5 trademark administrative cases (3 refusal reviews and 2 opposition reviews) in Beijing Intellectual Property Court, successfully reversing the decisions of the TRAB (Trademark Review and Adjudication Board) and protecting our client’s trademarks.
In the 3 refusal review cases, the court confirmed the effect of a consent letter for trademark co-existence between the associated companies. The court ruled that any company issuing a consent letter for trademark co-existence to its associated company is in line with commercial practice, and as such, there should be no reasonable cause for confusion, as although the two trademarks are of highly similar, the disputed trademark contains the trade name of the cited mark owner.
In the 2 opposition review cases, the following breakthroughs were ruled by the court:
(1) The court accepted our evidence which had never been submitted to the TRAB, and based on said evidence, recognized the prior use and fame of our client’s mark in determining that trademark squatting by the other party had occurred. It is remarkable that the court explicitly indicated in its judgment that trademark squatting is forbidden.
(2) The court regards “Television apparatus; Radios” (in Subclass 0908) and “Cables [electric]; Wires [electric]” (in Subclass 0912) as similar. It is a breakthrough in determining the similarity of goods/services.
These recent cases suggest that the court is willing to apply the principle of good faith and the principle of protecting prior rights, thereby respecting the legislative spirit of trademark law in real cases rather than confining itself to the wording of the law. Also, we can see from these cases that the court is making an effort to crack down on trademark squatting.